Case 1:16-cv-02455-SEB-MJD Document 1 Filed 09/14/16 Page 1 of 14 PageID #: 1

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION

ALLISON TRANSMISSION, INC.,

Plaintiff,
vs.

FLEETPRIDE, INC.
Defendant

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Civil Action No. 1:16-cv-2455

JURY TRIAL DEMANDED

COMPLAINT
Allison Transmission, Inc. (Allison or Plaintiff), for its Complaint against the
Defendant, Fleetpride, Inc. (Fleetpride or Defendant) alleges and states:
PARTIES, JURISDICTION, AND VENUE
1.

Allison is a Delaware corporation with its principal place of business in

Indianapolis, Indiana.
2.

Upon information and belief, Fleetpride is a Texas corporation with its

headquarters in Irving, Texas. Fleetpride has stores across the country, including a Fleetpride
store and place of business at 1140 S. West Street, Indianapolis, Indiana.
3.

This action arises under the trademark and unfair competition laws of the United

States and is brought pursuant to Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. 1114
and 1125(a), and common law.
4.

This Court has jurisdiction over the subject matter of this case pursuant to 15

U.S.C. 1121, and 28 U.S.C. 1331 and 1338(b).

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5.

This Court has supplemental jurisdiction over the claims in this Complaint that

arise under state common law pursuant to 28 U.S.C. 1367(a) because these state law claims are
so related to Plaintiffs claims under federal law that they form part of the same case or
controversy and derive from a common nucleus of operative facts.
6.

This Court has personal jurisdiction over Defendant because Defendant has been

conducting continuous and systematic business within the State of Indiana and within the
boundaries of the Southern District of Indiana by promoting, advertising, offering for sale, and
selling its goods and services. Further, Defendant has caused harm and committed the unlawful
acts hereinafter complained of in the Southern District of Indiana.
7.

Venue is proper in this district pursuant to 28 U.S.C. 1391(b).

ALLEGATIONS COMMON TO ALL COUNTS
The Business and Trademarks of Plaintiff

8.

Allison introduced the worlds first fully automatic transmission for commercial

vehicles nearly 70 years ago. Since that time, Allison has developed a global reputation as the
leading manufacturer of high quality, reliable, medium- and heavy-duty automatic transmissions.
Over time, Allison has recognized the importance of using transmission fluids with the
appropriate qualities to maximize the performance and productive life of its transmissions.
9.

Allison has devoted significant resources to the development of extensive

specifications and a rigorous testing regimen for ensuring that the transmission fluids meeting
Allisons specifications are of very high quality and will work especially well in its
transmissions.

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10.

In 1999, Allison developed a transmission fluid certification standard to help

assure the public that transmission fluids meeting the certification standard would work
particularly well with its transmissions.
11.

Allison coined the unique trademark TES 295 to use in connection with this

certification standard. To protect its rights in the TES 295 mark, Allison sought and achieved
federal registration of the TES 295 trademark in multiple variations (collectively, the TES 295
Marks):
Mark
TES 295

Goods
Transmission fluid

Reg. No.
4379699

Reg. Date
August 6, 2013

Transmission fluid

4166531

July 3, 2012

Transmission fluid

4993880

July 5, 2016

Copies of the registration information for the TES 295 Marks are attached to the Complaint at
Exhibit A.
12.

Although certain elements of the TES 295 certification standard are known,

Allison maintains the confidentiality of other elements of that certification standard.

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13.

To license the right to use and display the TES 295 Marks, a licensee must first

demonstrate that its transmission fluid meets the rigorous requirements of Allisons certification
standard.
14.

Through the extensive, continuous use and promotion of the TES 295 Marks, the

TES 295 Marks have become associated with Allison and with the products certified by Allison.
15.

Allison has used and continues to use the TES 295 Marks to specify transmission

fluids that are certified by Allison and that meet its exacting standards.
16.

The TES 295 Marks are distinctive of the certification of transmission fluid

products by Allison.
17.

As a result of its certification of products under the TES 295 Marks, as well as the

promotion and use of the TES 295 Marks in connection with the sale and offering for sale of
transmission fluids certified by Allison, the TES 295 Marks and the goodwill of the business
associated therewith are of significant value to Allison.
Relevant Background and Discussion Between the Parties
18.

In May of 2015, Allison became aware that Fleetpride was marketing and selling

transmission oil under the name PRIMATECH TES295 and prominently using a version of the
TES 295 Marks within its product numbers and in its advertising.
19.

On June 4, 2015, counsel for Allison sent a letter to Fleetpride, providing

information related to the TES 295 Marks and requesting that Fleetpride and its affiliates
immediately cease and desist from using language in its product packaging and advertising likely
to deceive the public into assuming that Fleetprides transmission fluid met Allisons
certification standards and using one or more of the TES 295 Marks as incorporated in its

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product names, product numbers, advertising, and any other manner likely to confuse and
deceive the public (collectively, the Infringing Marks).
20.

On June 16, 2015, the general counsel for Fleetpride responded, assuring Allison

that Fleetpride had changed the product labeling to address Allisons concerns. Fleetpride,
however, failed to do so.
21.

On June 22, 2015, counsel for Allison responded to Fleetpride outlining its

continued objections to Fleetprides product advertising and packaging and reiterating its
demands that Fleetpride cease its confusing and deceptive use of the Infringing Marks.
22.

In late July 2015, Allison received a response from outside counsel for Fleetpride.

Fleetprides counsel explained that Fleetpride believed its use of the Infringing Marks was fair
use and that Fleetpride would continue to use the Infringing Marks.
23.

Given the parties continued disagreement as to the acceptable use of the TES 295

Marks and Fleetprides statements regarding the quality of its transmission fluid, the parties and
counsel discussed the matter via telephone in early August 2015 in hopes of facilitating an
amicable resolution.
24.

In September of 2015, outside counsel for Fleetpride proposed general settlement

terms that involved Fleetpride ceasing use of the Infringing Marks in its product names, product
numbers, and advertising. Fleetprides counsel indicated that Fleetpride would phase out use of
the Infringing Marks by the end of 2015.
25.

The parties sought to put the settlement terms in writing and counsel for

Fleetpride offered to draft a settlement agreement beginning in October 2015.

26.

Despite reminders and follow up emails from counsel for Allison, counsel for

Fleetpride took nearly two months to provide an initial draft of the settlement agreement.

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Despite the delays in producing the draft settlement document, counsel for Fleetpride continued
to assert that Fleetpride would cease use of the Infringing Marks in its product name, product
number, and advertising by the end of 2015.
27.

Fleetpride did not cease use of the Infringing Marks at the end of 2015 and

Allison continued to find evidence of unauthorized use of the Infringing Marks by Fleetpride
after the end of 2015, and pointed out the same to Fleetprides counsel.
28.

Despite Allisons continued good faith negotiations and Fleetprides assertions

that the settlement terms were close to being finalized, on February 2, 2016, counsel for
Fleetpride informed Allison that Fleetpride was not agreeable to Allisons most recently
proposed amendments to the settlement agreement and had decided not to enter into any
settlement agreement with Allison.

As justification, counsel for Fleetpride asserted that

Fleetpride had addressed Allisons concerns and ceased use of the Infringing Marks, including in
its product numbers, and Fleetpride would therefore consider the matter resolved.
29.

Since Fleetprides email of February 2, 2016, counsel for Allison has identified

multiple instances of Fleetprides continued use of the Infringing Marks and has reiterated its
demand that Fleetpride immediately cease use of the Infringing Marks.
30.

Most recently, in August 2016, despite Fleetprides numerous assertions to the

contrary, Allison determined that Fleetpride continues to sell its products bearing the Infringing
Marks.
Defendants Current Infringement
31.

Fleetprides adoption and continued use of one or more of the TES 295 Marks is a

clear and willful attempt to trade on Allisons TES 295 Marks and the goodwill symbolized
thereby.

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32.

Fleetpride continues to prominently use one or more of the TES 295 Marks in its

product numbers as displayed on Fleetprides product packaging, product catalogs, advertising

and marketing materials, despite its many statements to the contrary and with full knowledge of
Allisons rights in and to the TES 295 Marks. Photographs showing one example of Fleetprides
current infringing activities can be found at Exhibit B.
33.

Fleetprides product packaging, advertising, and marketing materials constitute

false and deceptive advertising.

34.

The goods offered by Fleetpride are not and have never been approved by Allison,

and Fleetpride does not have the sponsorship, consent, approval, or certification of Allison to use
the TES 295 Marks.
35.

Fleetprides adoption and use of the Infringing Marks, and its false and deceptive

advertising statements concerning the quality of its products, have been made in interstate
commerce.
36.

Fleetprides goods and the goods certified by Allison under its TES 295 Marks

are each transmission fluids and are marketed through the same channels of trade and to the same
consumers.
37.

Fleetprides use of the Infringing Marks falsely creates the impression that

Fleetprides goods are offered or certified by or affiliated with Allison, and constitutes trademark
infringement and unfair competition.
38.

Fleetprides unfair competition, false and deceptive advertising, and infringement

demonstrate intentional, willful, and bad faith attempts to deceive or to create mistake or
confusion in the minds of customers relying on the TES 295 Marks and potential customers and
in the minds of the public, to trade on Allisons goodwill, to palm off Fleetprides products as

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those authorized or certified by Allison, and to create the false impression of a connection,
affiliation, or association with, sponsorship or approval by or between Allison and Fleetpride, all
causing irreparable injury to Allison.
39.

Fleetpride knows that its activities described above are infringing, and thus its

continued infringing acts are committed knowingly, willfully, and in bad faith.
COUNT I
INFRINGEMENT OF FEDERALLY REGISTERED TRADEMARK
(LANHAM ACT, 15 U.S.C. 1114(1))
40.

Allison realleges and incorporates by reference the allegations of paragraphs 1

through 39 as if fully set forth in this paragraph.

41.

Fleetprides promotion, advertising, provision, sale, and offering for sale of its

products under the Infringing Marks are likely to confuse, mislead, or deceive consumers, the
public, and the trade as to the origin, source, sponsorship, or affiliation of said products, and is
intended and is likely to cause such parties to believe in error that the Fleetpride products have
been authorized, sponsored, approved, endorsed, or licensed by Allison, or that Fleetpride is in
some way related to or affiliated with Allison.
42.

Fleetprides activities, as described herein, constitute infringement of the TES 295

Marks in violation of the Lanham Act, including, but not limited to, 15 U.S.C. 1114.
43.

Fleetprides use of the Infringing Marks with the promotion, advertising, and sale

of its products has been and continues to be willful, deliberate, unfair, false, deceptive, and is
intended to trade upon the goodwill and reputation appurtenant to the TES 295 Marks.
44.

Fleetprides acts have damaged and will continue to damage Allison.

45.

As a result of these wrongful acts, Allison is entitled to injunctive relief

prohibiting Fleetpride from using the TES 295 Marks, or any marks confusingly similar thereto,

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in accordance with 15 U.S.C. 1116, and to recover all damages, that Allison has sustained and
will sustain, and all gains, profits, and advantages obtained by Fleetpride as a result of its
infringing acts in an amount not yet known, as well as the costs of this action, pursuant to 15
U.S.C. 1117(a).
46.

This is an exceptional case justifying the award of attorneys fees under Section

1117(a).
COUNT II
FEDERAL UNFAIR COMPETITION
AND FALSE DESIGNATION OF ORIGIN
(LANHAM ACT, 15 U.S.C. 1125(A))
47.

Allison realleges and incorporates paragraphs 1 through 46, as if fully set forth in

this paragraph.
48.

Fleetprides conduct complained of herein constitutes federal unfair competition,

false designation of origin, and false advertising pursuant to 15 U.S.C. 1125(a).

49.

Fleetprides intentional and unlawful use in commerce of the TES 295 Marks is

likely to cause confusion, mistake, or deception as to origin, sponsorship, or approval of

Fleetpride by Allison and therefore constitutes false designation of origin and false advertising,
in violation of 15 U.S.C. 1125(a).
50.

As a direct and proximate result of Fleetprides knowing, deliberate, and willful

infringement of the TES 295 Marks, Allison has suffered and will continue to suffer harm to its
business, reputation, and goodwill.
51.

As a result of these wrongful acts, Allison is entitled to injunctive relief

prohibiting Fleetpride from using the TES 295 Marks, or any marks confusingly similar thereto,
in accordance with 15 U.S.C. 1116, and to recover all damages, that Allison has sustained and
will sustain, and all gains, profits, and advantages obtained by Fleetpride as a result of its
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infringing acts in an amount not yet known, as well as the costs of this action, pursuant to 15
U.S.C. 1117(a).
52.

This is an exceptional case justifying the award of attorneys fees under Section

1117(a).
COUNT III
COMMON LAW UNFAIR COMPETITION
AND TRADEMARK INFRINGEMENT
53.

Allison realleges and incorporates paragraphs 1 through 52, as if fully set forth in

this paragraph.
54.

Allison is the owner and authorized user of the TES 295 Marks, with the right to

enforce the TES 295 Marks. Fleetpride is not authorized to use the TES 295 Marks, or any mark
confusingly similar to the TES 295 Marks.
55.

The TES 295 Marks are inherently distinctive. In addition, Allison established

secondary meaning in the TES 295 Marks in connection with its certification of goods before
Fleetpride began using the TES 295 Marks.
56.

Fleetpride has sold, promoted, and offered for sale its products and services using

the TES 295 Marks in violation of and with knowledge of Allisons rights to the TES 295 Marks
for the purpose of trading upon Allisons goodwill and reputation.
57.

Fleetprides use of the TES 295 Marks constitutes a willful and intentional

infringement of Allisons common law trademark rights in the TES 295 Marks and is likely to
cause confusion, mistake, and deception as to source, affiliation, or sponsorship with Allison.
58.

Allison has been harmed by Fleetprides wrongful acts.

59.

Allison is entitled to injunctive relief, recovery of Fleetprides profits, actual

damages, treble profits and damages, costs, and reasonable attorneys fees.

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COUNT IV
FALSE DESCRIPTION OF GOODS
60.

Allison realleges and incorporates paragraphs 1 through 59, as if fully set forth in

this paragraph.
61.

Consumers viewing the Suitable for Allison Transmissions statements in

connection with the use of the Infringing Marks will assume that Allison has recommended or
certified Fleetprides products.
62.

Fleetprides actions are calculated to willfully and intentionally cause actual

confusion and are likely to cause confusion or mistake among purchasers as to the true origin,
source, sponsorship, or affiliation of Fleetprides goods and services with Allison, or of the
approval by Allison of Fleetprides goods and commercial activities, in violation of 15 U.S.C.
1125(a).
63.

Fleetprides actions have harmed and continue to harm Allison.

64.

As a result of these wrongful acts, Allison is entitled to recover actual and treble

damages, an accounting of Fleetprides profits, reasonable attorneys fees, and the costs of this
litigation pursuant to 15 U.S.C. 1117.
PRAYER FOR RELIEF
WHEREFORE, Allison requests the Court to award the following relief:
1.

The seizure of all products, product packaging, advertising materials, and other

things within Fleetprides possession or control bearing any false or misleading statements
relating to the TES 295 certification, the Infringing Marks, other TES 295 Marks, or any other
Allison trademark likely to cause confusion (collectively, the Infringing Products and
Materials).

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2.

An order by the Court that Fleetpride recall all Infringing Products and Materials

that have been sold or otherwise distributed and inform all customers who have purchased
Infringing Products and Materials that those products and materials do not meet the TES 295
certification standard and that use of such Infringing Products and Materials may adversely
affect any relevant Allison transmission warranty.
3.

An order by the Court that Fleetpride provide Allison with information regarding

all customers that have purchased the Infringing Products and Materials.
4.

The issuance of preliminary and permanent injunctions enjoining and restraining

Fleetpride, its associates, agents, servants, employees, officers, directors, representatives,

successors, assigns, attorneys and all persons, including but not limited to all of Fleetprides
dealers, distributors and customers, in active concert or participation with it who learn of the
injunction through personal service or otherwise:
(a) from using the TES 295 Marks or any marks confusingly similar to the TES 295
Marks, including but not limited to, the marketing and sale of any product bearing the
TES 295 Marks without the authorization of Allison;
(b) from claiming, representing, suggesting, or implying to offer goods that meet or
exceed any certification standards of Allison, including but not limited to its TES 295
certification standard;
(c) from representing by words or conduct that Fleetpride or its products are authorized,
sponsored, endorsed, or otherwise connected with Allison;
(d) from making false or deceptive statements, misrepresentations, or statements
comparing Fleetprides products with the TES 295 certification without adequate
investigation or testing by Fleetpride; and

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(e) from engaging in any other conduct which causes, or is likely to cause, confusion,
mistake, deception, or misunderstanding as to the source, affiliation, connection or
association of Fleetpride or its products and services with Allison.
5.

An accounting and judgment against Fleetpride and all others acting concert with

it, for (a) all profits received from the sale of goods or services by Fleetpride in association with
the infringement of the TES 295 Marks or any marks confusingly similar to the TES 295 Marks;
(b) all profits received from the sale of goods or services by Fleetpride in conjunction with its
claims or representations that those goods or services met or exceeded specifications of Allison;
(c) damages sustained by Allison on account of Fleetprides trademark infringement, unfair
competition, and false designation of origin; (d) treble damages, where appropriate; and (e)
punitive damages to deter such actions in the future.
6.

An enhancement of damages to a sum not exceeding three (3) times the profits

earned by Fleetpride as a result of their willful and improper use of marks confusingly similar to
the marks of Allison.
7.

Damages under 15 U.S.C. 1117(b) and 15 U.S.C. 1117(c).

8.

Pursuant to 15 U.S.C. 1118, the destruction of all business cards, invoices,

forms, advertisements, packaging, catalogs, promotional materials or any other materials bearing
the TES 295 Marks or any other mark confusingly similar to the TES 295 Marks, and the
modification of all websites, domain names, social media handles, URLs, and other digital or
online properties owned or controlled by Fleetpride to delete use of the TES 295 Marks or any
references to the TES 295 Marks.
9.

Allisons costs of this suit, including reasonable attorneys fees and expenses,

with interest pursuant to 15 U.S.C. 1117.

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10.

All other just and proper relief.

Respectfully submitted,

/s/Deborah Pollack-Milgate
Deborah Pollack-Milgate (#22475-49)
David A.W. Wong (#25161-49)
Caitlin R. Byczko (#31905-49)
BARNES & THORNBURG LLP
11 South Meridian Street
Indianapolis, Indiana 46204
Telephone: 317-236-1313
Attorneys for Plaintiff,
Allison Transmission, Inc.

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